Skyspan (Pacific) Pty Ltd v Rodric Fooks

[2003] ATMO 31

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Skyspan (Pacific) Pty Ltd to registration of trade mark application 836965 (classes 6, 11, 19, 37, 40 & 42) - SKYSPAN DEVICE - filed in the name of Rodric Fooks.

and:Opposition by Rodric Fooks to registration of trade mark application 806311 (classes 6, 37 & 42) - SKYSPAN DEVICE - filed in the name of Skyspan (Pacific) Pty Ltd.

Date of Decision:

14 May 2003

Delegate:

Terry Williams

Representation:

Skyspan (Pacific) Pty Ltd: Brian Elkington,  Blake Dawson Waldron

Rodric Fooks: James Maxwell of Peter Maxwell and Associates

Decision:

S. 52 opposition: no grounds established by either party.  Goods are sufficiently dissimilar (s 58) and Pacific's s 60 evidence is ambiguous.  Both applications may proceed to registration.

Background

1. These matters are cross-oppositions.  The first party to file its trade mark application was Skyspan (Pacific) Pty Ltd ("Pacific") the Australian part of a conglomerate that makes and markets plastic membrane, most typically for covering large areas.  Its application, 806311, was filed on 7 September 1999.  Pacific seeks to register the following trade mark

    
   

   2.     It seeks registration in respect of various goods and services:

   Extruded and rolled sections, structural building elements of metal, metal elements for connecting structural members (class 6),

   The construction of extruded and rolled metal sections, structural building elements of metal, metal elements for connecting structural members (class 37) and

   The design of extruded and rolled metal sections, structural building elements of metal, metal elements for connecting structural members (class 42).

   3.     The other party in these matters is Rodric Fooks.  Mr Fooks filed application number 836965 on 19 May 2000.  Mr Fooks's business is smaller, and he essentially sells skylights, though I use that term loosely for the sake of convenience.  Mr Fooks's trade mark is as follows:

    
   

   4.     He seeks registration in respect of goods and services classified as follows:

   Metal building materials including skylights, roofing systems, window frames in this class, barrel vaults, domes and pyramids, vents in this class, hatchways, structural building elements and supports, elements for connecting structural members, parts, fittings and components for membrane structures, framework, boards, panels and reinforcing materials, and including metallic parts and fittings therefor (class 6),

   Lighting systems, light tubes, light diffusers and light grids (class 11),

   Non-metallic building materials including skylights, diffusers for skylights, roofing systems, window glass, window frames in this class, barrel vaults, domes and pyramids, vents in this class, diffusers, hatchways, structural building elements and supports, elements for connecting structural members, parts, fittings and components for membrane structures, framework, boards, panels and reinforcing materials, and including non-metallic parts and fittings therefor (class 19),

   Installation and construction of structural membranes, skylights, roofing and lighting systems, barrel vaults, light grids, domes, pyramids, vents, light diffusers, hatchways (class 37),

   Custom manufacture of structural membranes, skylights, roofing and lighting systems, barrel vaults, light grids, domes, pyramids, vents, light diffusers, hatchways (class 40) and

   Design of structural membranes, skylights, roofing and lighting systems, barrel vaults, light grids, domes, pyramids, vents, light diffusers, hatchways (class 42)

   5. Mr Fooks's application was later than, and therefore obstructed by, that of Pacific in terms of s 44(1) and (2) of the Trade Marks Act 1995.  Even so, it was able to be accepted under the provisions of s 44(4), on the basis of evidence of use before the priority date of Pacific's application.  The latter has also been accepted for registration but, as I have said, this is opposed by Mr Fooks.  Pacific has opposed registration of Mr Fooks's application.

   6.     After filing their respective notices of opposition to registration, both parties have filed, and served copies of, evidence to support their respective positions.  Since this is a cross-opposition, material that is evidence in support of one opposition is also evidence in answer to the other.  The evidence is as follows:

   Pacific's Evidence

Declaration by	Dated	Annexures
Donald Ransom	20 November 2001	A

Mr Fooks's Evidence

Declaration by	Dated	Annexures
Rodric Fooks	17 July 2002	RLF1-15

7.     Both parties requested to be heard and I was assigned to hear and decide the oppositions, under delegation from the Registrar of Trade Marks.  At that hearing, Pacific was represented by its solicitor, Brian Elkington of the firm of Blake Dawson Waldron, while Mr Fooks was represented by James Maxwell of the firm of Peter Maxwell and Associates.

Evidence in detail

8.     I will summarise the main elements of the evidence in the light of the submissions directed at it.

9.     Mr Fooks declares that he[1] has used the trade mark SKYSPAN, and here he refers to the word alone, in relation to a broad range of metal and non-metallic building materials including skylights and barrel vaults, and to the service of design, manufacture, installation and construction of such goods.  The mark has been in use by the business since, he says, October 1994.  However, the declaration is vague as to what that use might initially have consisted of, and it appears that Mr Fooks relies on nothing more than a registration of a business name at that time.  There are subsequent entries listing the name in a trade directory, The Book, and in the Sydney Yellow Pages.  The latter has been continuous since, Mr Fooks declares, 1994/95.  Reference to these listings, and to the brochures in evidence, shows that Mr Fooks trades in skylights of the domestic and commercial sorts.  The latter include barrel vaults big enough to cover a courtyard.  The identifier used in the listings is generally SKYSPAN INDUSTRIES. 

[1] His business is actually a partnership with Kathryn Fooks though this fact does not affect my decision.

10.   Mr Fooks does not spend a great deal on promotion.  His goods or services are promoted directly to architects, builders and designers by sales representatives, of whom there seem to have been four, besides Mr Fooks, in 1999, in September of which year Mr Fooks must establish a reputation for the purposes of s 60.  Details of matters prior to that year are somewhat sketchy.  There is very little by way of detail of what Mr Fooks calls "a small amount of advertising in other publications", ie other than The Book. 

11.   Invoices, critical to a demonstration of ownership of a trade mark, make up exhibit RLF-12.  The abbreviations used are somewhat cryptic but appear to relate to skylights and to components for these.  Individual items are generally of no great price, though there is an invoice dated 22 December 1995 for what is said to be a SKYSPAN opening roof, to be installed for a total price of $15000.  The biggest single item for which there is an invoice is described as the supply and installation of a Modular Domelink (5.4m x 10.3m), sold for $15762.  This, however, is issued in the name SKYSPAN INDUSTRIES and there is nothing in this exhibit to show evidence of the use of a SKYSPAN trade mark.

12.   Exhibit RLF-6 has brochures used by Mr Fooks since at least March 1999.  These show, in the context of the other evidence, a clear trade under the mark applied for.

13.   Pacific, for its part, tends to do with flexible fabric membranes what Mr Fooks does with rigid glass and plastic, albeit on a scale that is generally larger.  Mr Fooks, at clause 18, is careful to declare only that his goods are "similar" to those of Pacific[2]. Pacific provides fabric roofing for hotels, sports stadia and all manner of buildings.  It also provides outdoor umbrellas for restaurants etc, down to sizes of 3 metres square.  These, strictly speaking, are sold under the trade mark SKYSHADE, though Pacific's mark is also used as something of a house mark.

[2] The word "identical" has been stricken from his declaration before signing.

14.   Pacific is the later arrival on the scene, though it is now much the bigger of the two operations, with a domestic turnover in 1999 that was about six times that of Mr Fooks' as well as a considerable volume of exported goods.

15.   Mr Fooks's declaration shows some evidence of confusion in the building trades.  His business has, since late 1999, received many phone calls from people seeking to contact Tom Westacott, an officer of Pacific.

Grounds considered

16.   Mr Fooks, opposing registration of Pacific's application, now relies on three grounds of opposition.  These are s 42 (contrary to law) s 58 (ownership) and s 60 (conflicting prior reputation).

17.   Pacific nominated only one ground of opposition to the registration of Mr Fooks's later application, that under section 60.

Ownership- Section 58

18.   It is fairly clear that ownership is an issue of common law that can arise only where the trade marks in question are substantially the same mark, and that mere deceptive similarity is not sufficient[3]. 

[3] See Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (at 513).

19.   I note Mr Fooks claims to have used the word SKYSPAN on its own as a trade mark.  I think this is justified by the evidence, and first use goes to Mr Fooks.  On another front, Mr Elkington was dismissive of the evidence of use of the name SKYSPAN INDUSTRIES, arguing that it was simply a business name.  I do not agree that this is incompatible with trade mark use.  If the name is used as the identifier of the origin of goods in trade it becomes, at that point, a trade mark- see s 17.  However, as matters turn out, it will be convenient to leave the consequences of use of SKYSPAN INDUSTRIES to one side.

20.   I will not draw this matter out by repeating Mr Elkington's analysis of the obvious side-by-side visual differences between the marks sought to be registered.  Firstly, Mr Fooks has traded under the simple word mark SKYSPAN.  Were this in doubt, I would need to consider the mark Mr Fooks applied for, since use of this is shown on the brochures at RLF-6.  In such a case, I would be required to consider the importance of the differences to which Mr Elkington referred, within the context of the mark as a whole, "having regard to the essential features ... and the total impression of resemblance or dissimilarity that emerges"[4].  I think it would be a mistake to give undue weight to the differences in logos and fonts when, at heart, these are very strongly SKYSPAN trade marks supported by a logo that suggests, to differing degrees and in differing ways, a letter S. 

[4] Shell Company (Aust) v Esso Standard Oil (Aust) Limited, (1961) 109 CLR 407

21.   However, I prefer to decide this matter by reference to the goods or services for which the various trade marks have been used.  There, Mr Fooks's case for ownership is a narrow one.  I have not seen, at any point, a clear offer to trade in anything other than a skylight, a barrel vault or a component of such, prior to the first use by Pacific.  I think that the "kind of thing"[5] involved can therefore be distinguished and, whatever may be said about the comparison of various trade marks, Mr Fooks's case fails at that point.  To adopt the words of Mr Elkington, used in another context, one either covers a courtyard with a product from Mr Fooks, or from Pacific.  But there, in my opinion, the similarity ends.  Mr Fooks trades in rigid roofing solutions, as it were;  Pacific's products, for all that they may ultimately be roofs, are as different from Mr Fooks's products as roofing tiles are from corrugated iron.  This is graphically demonstrated by a picture appearing in one of the SKYSPAN brochures in exhibit RLF-6.  A barrel vault, made of what might be tinted perspex, is shown atop a building.  Above this, and apparently to shade it, is a fabric sail that appears to be very much the sort of thing that Pacific trades in.  However, nobody looking at the photo could mistake the one item for the other or fail to appreciate the obvious physical and manufacturing differences.

[5] Hicks’s Trade Mark, 22 VLR 636. See also the general discussion of the issue at pp 157-159 of D.R. Shanahan's Australian Law of Trade Marks and Passing Off, 1990 Edition.  Similarly, see p 78 of Trade Mark Law in Australia, by Elkington, Hall and Kell.

22.   Accordingly, Mr Fooks has not established a s 58 ground, and this ground was not relied upon by Pacific.

Contrary to law - Section 42

23.   This was a ground relied on by Mr Fooks, but not by Pacific.  However, it is fairly clear that Pacific does not appear to be passing its goods off as those of its opponent.  Nor is there evidence of conduct sufficient to satisfy me that it would be likely to mislead or deceive for the purposes of s 52 of the Trade Practices Act.  There is some evidence of confusion, it is true.  However, much of it consists of wrongly directed telephone calls and I think that this is simply because of the appearance of the word SKYSPAN in both entries in the phone directory.  This ground has not been made out.

Reputation - Section 60

24.   This, to make a long story simpler if no shorter, poses three questions:

·     Is there a conflicting - ie deceptively similar - trade mark, registered or otherwise?

·     Did that conflicting trade mark enjoy a reputation at the date that the other party filed the opposed application?

·     Will there, because of that reputation at that date, be deception or confusion arising from the fair use by the applicant of its trade mark for any goods for which registration is sought?

25.   Mr Elkington was very critical of the suggestion that there is evidence that Mr Fooks's trade mark had a sufficient reputation.  I agree with that criticism.  While the business Mr Fooks operates does have a reputation, it is probably localised and there is no evidence that it is more than slight.  Certainly, there is no evidence that many people are familiar with the mark.  While the turnover figures are respectable, the picture painted by the evidence does not show much by way of renown.  All bar one of the distributors of Mr Fooks's products are in New South Wales and the one exception is in the ACT.  Even within New South Wales, it would be a matter of unjustified conjecture to take the evidence as showing that many in the building trade are familiar with Mr Fooks's firm, service, or products. 

26.   Mr Maxwell, for his part, was equally critical of the sufficiency of the evidence on which Pacific relies.  There is, as he pointed out, a degree of ambiguity in it.  It is clear that Pacific has some connection with a major conglomerate that uses fabric membranes in major building products worldwide.  However, it is not clear how much of the conglomerate's business is, or, more significantly, was done under the trade mark in question prior to the date Mr Fooks filed his application.  Mr Ransom presumably is satisfied that the link is clear and the extent obvious but his declaration does not give me the basis on which to share his apparent view. 

27.   There are general statements like, with my emphasis added, "(Pacific) exports its goods to Hong Kong, India, Japan, Macau, the Middle East, the Philippines, Singapore, Taiwan and Vietnam.  The values of exports from Australia are:  (and then are quoted figures for 1999 and onward of in excess of two million dollars per year)".  Again: "Total annual sales, in Australia, of goods/services by (Pacific) associated with the trade mark are as follows" (and then are quoted figures in the millions of dollars per year).  It is simply not clear what Mr Ransom means by "associated with". 

28.   Presumably Mr Ransom expects me to infer from this that such sales were of goods bearing the trade mark, or for services sold under it.  However, I will not do so when the wording is ambiguous and when, significantly, one element of Annexure A to his declaration demands caution.  This shows a range of trade marks:  KOCH, HIGHTEX, SPACETECH, STRUCTUREFLEX, and MEMBRANE ASIA.  Another page of this tells me, unhelpfully, that (emphasis added) "Skyspan International is the merger of five of the leading architectural membrane companies in the world... now operating globally under one name".  Just when "now" is, is left indeterminate, and its effect on the existence of a relevant reputation is a matter of speculation.

29.   Pacific has a responsibility to establish, to my reasonable satisfaction, that a ground of opposition exists.  It has simply failed to put sufficient detailed and relevant information into its evidence.

Decision

30.   Neither party has established a ground of opposition.  Accordingly, my decision is that both applications may be registered after one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration of the relevant application shall not occur until the appeal has been decided or discontinued.

31.   I make no award of costs.  Each party is to bear its own.

Terry Williams

Hearing Officer

Trade Marks Hearings